TAKAHARA, Yoshifumi et al.

Patent Trials and Appeals Board

Nov 7, 2019

14936964 - (D) (P.T.A.B. Nov. 7, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/936,964 11/10/2015 Yoshifumi TAKAHARA 2015-1461 4905
513 7590 11/07/2019
WENDEROTH, LIND & PONACK, L.L.P.
1025 Connecticut Avenue, NW
Suite 500
Washington, DC 20036
EXAMINER
BALL, JOHN C
ART UNIT PAPER NUMBER
1795
NOTIFICATION DATE DELIVERY MODE
11/07/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIFUMI TAKAHARA, TAKAHIRO NAKAMINAMI, and
SHIN IKEDA
Appeal 2019-001207
Application 14/936,964
Technology Center 1700
Before LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 15, 19, 20, and 22–25.3
We AFFIRM.

1 This Decision includes citations to the following documents: Specification
filed Nov. 10, 2015 (“Spec.”); Final Office Action dated Mar. 2, 2018
(“Final”); Appeal Brief filed July 18, 2018 (“Appeal Br.”); Examiner’s
Answer dated Oct. 18, 2018 (“Ans.”); and Reply Brief filed Nov. 26, 2018
(“Reply Br.”).
2 We use the word “Appellant” to refer to the “Applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as PHC
Holdings Corporation of Tokyo, Japan. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-001207
Application 14/936,964

2
CLAIMED SUBJECT MATTER
The invention relates to a sensor for detecting or quantifying a target
substance in a liquid sample, Spec. ¶ 1, such as blood glucose level, id.
¶ 125. Claim 15, reproduced below, is illustrative of the claimed subject
matter:
15. A sensor for detecting or quantifying a target substance
contained in a liquid sample including blood, comprising:
a working electrode;
a counter electrode;
a quinone compound having quinone and at least one
hydrophilic substituent;
a coenzyme-dependent enzyme dehydrogenating or
oxidizing the target substance; and
a reagent layer including the coenzyme-dependent
enzyme and the quinone compound,
wherein the reagent layer is disposed so as to be in direct
physical contact with the working electrode and/or the counter
electrode,
the oxidation-reduction potential of the quinone
compound measured using a silver/silver chloride (saturated
potassium chloride) electrode as a reference electrode is less
than 0, is greater than oxidation reduction potential of the
coenzyme, and is smaller than oxidation reduction potential of
ascorbic acid,
the quinone compound has a hydrophilic functional
group,
the coenzyme-dependent enzyme is a PQQ-dependent, an
FAD-dependent, or an NAD-dependent enzyme, and
the quinone is a phenanthrenequinone.
Appeal Br. 9 (Claims Appendix).
Appeal 2019-001207
Application 14/936,964

3
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Pollmann US 5,288,636 Feb. 22, 1994
Knappe US 2008/0213808 A1 Sept. 4, 2008

Lapenaite et al., Some quinone derivatives as redox mediators for PQQ-
dependent glucose dehydrogenase, Biologija, No. 1, 2004, pp. 20–22;
hereinafter (“Lapenaite”).

Louis Frederick Fieser, The Reduction Potentials of Various
Phenanthrenequinones, Journal of the American Chemical Society, Vol. 51,
No. 10, 1929, pp. 3101–3111; hereinafter (“Fieser”).
REJECTION
Claims 15, 19, 20, and 22–25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pollmann in view of Lapenaite, Fieser, and Knappe.
OPINION
The Examiner found that Pollman discloses a sensor as recited in
claim 15, with the exception of a quinone compound. See Final 5–6. More
specifically, the Examiner found that Pollmann discloses a biosensor
comprising a reagent layer in direct physical contact with working and
counter electrodes. Final 5 (citing Pollmann Abstract, Figure 2). The
Examiner found that the reagent layer comprises the oxidized form of a
redox mediator, an enzyme, and a buffer. Id. (citing Pollmann 4:3–4, Table
1). The Examiner found that the enzyme may be a PQQ-dependent enzyme
or an FAD-dependent enzyme, e.g., glucose dehydrogenase. Id. at 5–6
(citing Pollmann Table 1). The Examiner found that Pollmann teaches that
“the mediator is chosen from ferricyanide, phenazine compounds, and . . .
Appeal 2019-001207
Application 14/936,964

4
benzoquinone compounds,” but does not disclose explicitly that the mediator
is a quinone compound having at least one hydrophilic substituent and the
oxidation-reduction potential recited in claim 15. Id. at 6 (citing Pollmann,
Table 1). However, as further discussed below, the Examiner determined
that one of ordinary skill in the art would have used a quinone compound
having the features recited in claim 15 as Pollmann’s mediator based on the
combined teachings of Lapenaite, Fieser, and Knappe. See Final 6–8.
Lapenaite discloses that 9,10-phenanthrenequinone is a suitable redox
mediator for PQQ-dependent glucose dehydrogenase. Lapenaite Abstract, 21
(Table); see Final 6. The Examiner found that Lapenaite’s disclosure would
have suggested the use of a 9,10-phenanthrenequinone as the mediator in
Pollmann (see Final 6–7; Ans. 3) which, as noted above, discloses the use of
a reagent comprising glucose dehydrogenase (see Pollmann Table 1).
Knappe discloses mediators for use in detecting an analyte in a
sample. Knappe ¶ 2, code (54). The sample may be whole blood, plasma, or
serum, and the analyte may be glucose. Id. ¶¶ 12–13. Knappe discloses an
embodiment wherein “the mediator comprises a phenanthrenequinone, a
phenanthrolinequinone or a benzo[h]quinolinequinone.” Id. ¶ 27; see Final
7. Knappe discloses that “substituents typically comprise groups which
increase the solubility of the mediator in the sample to be investigated, such
as, for example, quaternary amino groups, COOH and SO3H.” Knappe ¶ 37;
see Final 7. Fieser discloses the reduction potentials of substituted 9,10-
phenanthrenequinone compounds, including 9,10-phenanthrenequinone-1-
sulfonic acid, 9,10-phenanthrenequinone-2-sulfonic acid, and 9,10-
phenanthrenequinone-3-sulfonic acid. Fieser 3105 (Table III); see Final 7.
The Examiner found that one of ordinary skill in the art would have
Appeal 2019-001207
Application 14/936,964

5
incorporated a sulfonic acid substitutent on the 9,10-phenanthrenequinone
mediator in the Pollmann-Lapenaite sensor in order to increase the aqueous
solubility of the mediator, as taught by Knappe. Final 8 (citing Knappe ¶
37). The Examiner further found that the ordinary artisan would have
utilized one of the listed compounds described in Fieser, i.e., 9,10-
phenanthrenequinone-1-sulfonic acid, 9,10-phenanthrenequinone-2-sulfonic
acid, or 9,10-phenanthrenequinone-3-sulfonic acid. Id. at 7–8. The Examiner
notes that these compounds are among the compounds identified in claim
23—indirectly dependent from claim 15—as meeting the oxidation-
reduction potential requirements recited in claim 15. Ans. 5; see Appeal Br.
10 (Claims Appendix).
The Appellant argues “that the combination of Pollmann, Lapenaite,
Fieser, and Knappe fails to disclose or suggest the criterion for selecting
phenanthrenequinone derivatives suitable for electrochemical sensors or
indicate motivation to make such selection, as recited in independent claim
15,” Appeal Br. 5, i.e., “a phenanthrenequinone that can be measured
without being affected by ascorbic acid,” Reply Br. 2. The Appellant thus
contends the Examiner’s obviousness determination is based on improper
hindsight reasoning. Id. at 3.
The Appellant’s argument is not persuasive because it fails to identify
reversible error in the Examiner’s fact finding and reasoning. A reference’s
teachings and its obvious variants are relevant prior art, even if the reference
addresses a problem which differs from that addressed by a patent applicant.
In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007); see also
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (stating that it is
error to look “only to the problem the patentee was trying to solve”).
Appeal 2019-001207
Application 14/936,964

6
As found by the Examiner, see Final 6, Lapenaite describes 9,10-
phenanthrenequinone as one of a limited number of suitable redox mediators
for PQQ-dependent glucose dehydrogenase, see Lapenaite 21 (Table), which
Pollmann explicitly describes as an enzyme component in a reagent for
measuring the glucose level in a sample of human whole blood, see
Pollmann 6:26–29, Table 1. The Examiner found that one of ordinary skill in
the art would have incorporated a sulfonic acid substituent on the 9,10-
phenanthrenequinone mediator in order to increase the aqueous solubility of
the mediator, as taught by Knappe. Final 8. The Appellant has not explained
why these findings are erroneous or unreasonable. Lapenaite discloses that
the oxidation-reduction potential of 9,10-phenanthrenequinone as measured
using a silver/silver chloride reference electrode, is -0.24. Lapenaite 21
(Table). Fieser discloses that “[i]n the case of the sulfonic acid group the
influence on the potential is so slight that the effect of the position of the
substituent may well be masked,” Feiser 3108, and explicitly discloses three
9,10-phenanthrenequinones having sulfonic acid groups, see id. at 3105, that
are identified in the Appellant’s claim 23 as meeting the oxidation-reduction
potential requirements recited in claim 15, see Appeal Br. 10 (Claims
Appendix). Thus, contrary to the Appellant’s contention, see Appeal Br. 5,
the Examiner had a reasonable basis for finding that the ordinary artisan
would have expected a 9,10-phenanthrenequinone having a sulfonic acid
substituent to have an oxidation-reduction potential similar to that of 9,10-
phenanthrenequinone, as well as the advantage of increased aqueous
solubility, see Final 8. See In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir.
2009) (“Even if no prior art of record explicitly discusses the . . .
[limitation], [Appellant’s] application itself instructs that [the limitation] is
Appeal 2019-001207
Application 14/936,964

7
not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in [the claimed
invention].”).
The Appellant does not raise separate arguments in support of
patentability of any dependent claims and does not identify evidence of
unexpected results. Accordingly, we sustain the rejection of claims 15, 19,
20, and 22–25 for the reasons stated above, in the Final Office Action, and in
the Answer.

CONCLUSION
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
15, 19, 20,
22–25
103(a) Pollmann, Lapenaite,
Fieser, Knappe
15, 19, 20,
22–25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED